February 1, 2019
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SINGAPORE: Case Focuses on Meaning of a Word
In a recent proceeding initiated by the Chicago Mercantile Exchange Inc. (CME), the Intellectual Property (IP) Office of Singapore on September 24, 2018, declared invalid two trademarks, BRENT and BRENT INDEX (subject marks), registered in the name of Intercontinental Exchange Holdings Inc. (ICE).
The grounds of invalidity pled by CME were that the subject marks (1) were devoid of any distinctive character (Section 7(1)(b) of the Singapore Trade Marks Act) (the Act); (2) designated a characteristic of the goods or services applied for (Section 7(1)(c) of the Act); and (3) consisted exclusively of signs or indications which had become customary in the current language (Section 7(1)(d) of the Act).
On the first ground of invalidity, under Section 7(1)(b), the IP adjudicator reflected upon the meaning of the word “Brent.” He traced the origin of the word to the 1960s when the Shell Oil Company adopted it to describe a particular type of light and sweet crude oil extracted from the North Sea. CME also submitted supporting evidence that the word “Brent” is now a leading internationally recognized benchmark for oil prices and financial derivatives.
Further, the adjudicator referred to the judgment in Nestlé SA and another v. Petra Foods Limited (2016). The judgment explained that a mark which merely describes either the product or the trader will not generally be regarded as distinctive.
Therefore, upon careful review of the meaning of the word “Brent,” all the evidence submitted by CME, and the precedent set by earlier case law, the adjudicator declared that at least one of the possible meanings of “Brent” designated a characteristic of the financial services as set out in the specification, and thus the subject marks were devoid of distinctive character under Section 7(1)(b).
Concerning the ground of invalidation under Section 7(1)(c), the adjudicator referred to the judgement in Love & Co Ptd Ltd v. The Carat Club Pte Ltd (2009). It held that a mark must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services. The adjudicator noted that at least one of the possible meanings of “Brent” designated a characteristic of the financial services set out in the specification, and that the average consumer in Singapore who regularly dealt in financial services would not fail to make a connection between the subject marks and the characteristics of the services for which the marks had been registered.
Lastly, on ground of invalidation under Section 7(1)(d), upon considering the plethora of evidence submitted by both parties, the adjudicator was convinced that “Brent,” was a sign used customarily in the language of those involved in trading and otherwise dealing with financial derivatives connected with oil.
Accordingly, the subject marks were declared invalid in accordance with Section 23(10) of the Act.
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